`Patent 8,114,833 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`MYLAN INSTITUTIONAL LLC and PFIZER INC.,
`Petitioners,
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`v.
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`NOVO NORDISK A/S,
`Patent Owner.
`______________
`
`Case IPR2020-003241
`Patent 8,114,833
`______________
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70(a)
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`1 IPR2020-01252 has been joined with this proceeding.
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`IPR2020-00324
`Patent 8,114,833 B2
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`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner Novo Nordisk A/S (“Novo
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`Nordisk” or “Patent Owner”) requests oral argument in IPR2020-00324. Pursuant
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`to the Board’s June 23, 2020 Scheduling Order, Patent Owner understands that oral
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`argument is currently scheduled for March 26, 2021.
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`
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`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner respectfully requests up to
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`forty-five (45) minutes of oral argument per side on all issues raised in the Petition
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`(Paper 2), the Patent Owner Preliminary Response (Paper 11), the Board’s
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`Institution Decision (Paper 13), the Patent Owner Response (Paper 25), the
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`Petitioner Reply (Paper 35), and the Patent Owner Sur-Reply (Paper 45). These
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`issues include, but are not limited to, the following:
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`1. The scope and content of the prior art.
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`2. The patentability of claims 1-15 of U.S. Patent No. 8,114,833 over Flink
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`(Ex. 1004) under 35 U.S.C. § 102.
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`3. The patentability of claims 1-15 of U.S. Patent No. 8,114,833 over Flink
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`(Ex. 1004) under 35 U.S.C. § 103.
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`4. The patentability of claims 1-31 of U.S. Patent No. 8,114,833 over Flink
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`(Ex. 1004) and Betz (Ex. 1005) under 35 U.S.C. § 103.
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`5. Whether Betz (Ex. 1005) qualifies as prior art to U.S. Patent No. 8,114,833
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`under 35 U.S.C. § 102(e).
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`1
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`IPR2020-00324
`Patent 8,114,833 B2
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`6. Whether Novo Nordisk reduced the claimed inventions of U.S. Patent No.
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`8,114,833 to practice by at least April 23, 2003.
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`7. Whether secondary considerations support the patentability of the claims
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`of U.S. Patent No. 8,114,833.
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`8. Any issues raised by the Petitioners at the oral argument.
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`9. Any other issues raised in papers filed in this proceeding, including issues
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`to be raised in papers not yet filed, including but not limited to Motions to
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`Exclude.
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`10. Any additional issues on which the Board seeks information or
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`clarification.
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`Subject to the Board’s approval, Patent Owner intends to use demonstrative
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`exhibits during the oral argument. Such demonstrative exhibits will be served in due
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`course according to 37 C.F.R. § 42.70(b). Should the oral argument be conducted
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`in-person, Patent Owner also intends to request the use of audio-visual equipment
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`during its presentation, including a computer, projector, and screen on which to
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`display demonstrative exhibits.
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`Patent Owner expects that more than five individuals will attend the oral
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`argument on Patent Owner’s behalf.
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`2
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`IPR2020-00324
`Patent 8,114,833 B2
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`Dated: February 12, 2021
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`Respectfully submitted,
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`/Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
`Lead Counsel
`
`Ryan P. Johnson
`Laura T. Moran
`Back-Up Counsel
`
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600
`joelke@fenwick.com
`ryan.johnson@fenwick.com
`laura.moran@fenwick.com
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`Counsel for Patent Owner Novo Nordisk A/S
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`3
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`IPR2020-00324
`Patent 8,114,833 B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on February 12, 2021,
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`the foregoing document is being served by filing this document through the Patent
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`Trial and Appeal Board End to End System, as well as delivering a copy via
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`electronic mail upon the following attorneys of record for the Petitioners:
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`Brandon M. White (Reg. No. 52,354)
`Perkins Coie LLP
`700 Thirteenth Street, N.W., Suite 600
`Washington, D.C., 20005
`Telephone: (202) 654-6206
`BMWhite@perkinscoie.com
`White-ptab@perkinscoie.com
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`Lara Dueppen (Reg. No. 65,002)
`Perkins Coie LLP
`1888 Century Park East
`Suite 1700
`Los Angeles, CA 90067
`Telephone: (310) 788-3349
`LDueppen@perkinscoie.com
`Dueppen-ptab@perkinscoie.com
`Liraglutide@perkinscoie.com
`
`Jovial Wong (Reg. No. 60,115)
`Sharon Lin
`Winston & Strawn LLP
`1901 L St. NW
`Washington, DC 20036
`Telephone: (202) 282-5000
`Fax: (202) 282-5100
`jwong@winston.com
`slin@winston.com
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`IPR2020-00324
`Patent 8,114,833 B2
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`Thomas J. Meloro (Reg. No. 33,538)
`Michael W. Johnson (Reg. No. 63,731)
`Willkie Farr & Gallagher LLP
`787 Seventh Avenue
`New York, NY 10019
`Telephone: (212) 728-8428
`Fax: (212) 728-8111
`tmeloro@willkie.com
`mjohnson1@willkie.com
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`Date: February 12, 2021
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`Respectfully submitted,
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`/Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
`Lead Counsel
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